Friday, August 17, 2012

Hearthware owns the NU WAVE mark for halogen ovens
(registered as NuWave Pro Infrared Oven), while Mishan used Super Wave (also
registered) for competing products.Hearthware sued for copyright infringement, violation of the Lanham Act,
and related state law claims.

A halogen
oven/infrared oven/convection oven is “a portable cooker that uses energy from
a halogen heat source located in the cooker's lid.”A fan circulates the hot air for even
cooking, while an infrared element emits heat that cooks the food from the
inside out.A halogen oven can brown or
crisp foods, unlike a microwave, and is more movable and fast than a
conventional oven.

Hearthware alleged copyright infringement in two
infomercials, one from 2008 and one from 2010, a “moderately updated” version
of the first, but the court focused on the 2010 version because the parties
didn’t distinguish them.

opens with a flurry of incentives
for potential buyers, including a two-year warranty and free items such as a
blender/food processor. The product's benefits are summarized and then
revisited by an upbeat host, who presents the product with the assistance of a “TV
Cooking Expert.”The two hosts
energetically sample food cooked in the NuWave oven and explain how the product
may improve the lives of buyers. This presentation is frequently interrupted by
enthusiastic testimonials, demonstrations, and reminders as to the details of
the bonus-laden offer. The infomercial
is rife with images of different types of food cooking illustrated with
time-lapse photography.

As for Mishan aka Emson, it sells many products, including
some licensed to use the Sharper Image trademark, subject to licensing
requirements including product approval and other quality control
provisions.The Sharper Image didn’t
engineer the Super Wave oven and doesn’t provide its warranty or money-back
guarantee.Emson registered “Super Wave”
as a trademark, and marketed its competing product as the the Sharper Image
Super Wave Oven, using the Sharper Image mark prominently on packaging and in
ads.It produced a competing infomercial:

No actual footage from the NuWave
infomercial is included in the Super Wave infomercial but the competing
infomercials share a number of similarities. Both show many of the same foods
being prepared and use time-lapse photography to demonstrate the cooking
process. Both suggest their respective products may be used in a recreational
vehicle (“RV”), a dorm, or on a boat. Both feature a host knocking frozen food
against a hard surface to demonstrate that it is frozen. The hosts are chipper,
the testimonials enthusiastic, and the virtues of the product emphatically
conveyed. The Sharper Image is mentioned dozens of times in the Super Wave
infomercial. The Super Wave infomercial notes that the Super Wave oven is the
result of “thirty-two years of The Sharper Image design ingenuity” and that the
Super Wave's warranty and money-back guarantee are provided by The Sharper
Image.

The court first analyzed Hearthware’s copyright infringement
claim.Along with the similarities noted
above, both “feature demonstrations of food cooking, including many of the same
foods (in particular, salmon cooked at the same time as asparagus); …note that
the ovens are able to broil, roast, grill, bake, barbecue, steam, dehydrate,
and air fry; … use similar words to describe the abilities of the free blenders
that come with the products; [and] [t]he Super Wave infomercial touts ‘tri-cooking
technology’ while the NuWave infomercial promises ‘triple-combo cooking power.’”
A potentially important procedural note,
at least for those arguing about idea/expression or the extrinsic test: the
court refused to consider about thirty additional alleged similarities,
including “the presence of a male and a female host, the hosts hugging upon
greeting, the cooking of a sixteen-pound turkey, and the use of testimonials,”
because Hearthware didn’t identify them in response to Mishan’s interrogatories
requesting identification of all words, phrases, imagery, and actions alleged
to be identical or substantially similar to the NuWave infomercials.As a result, Mishan’s discovery and summary
judgment motion “understandably focused on similarities alleged in the
complaint and in response to its contention interrogatories. For example, in
arguing for the application of the scènes à faire doctrine, Mishan presents a
chart addressing each of the similarities alleged in the complaint. Hearthware
may not add new claims after the motion for summary judgment was filed without
leave of court.”How does this square,
if at all, with the idea that there can be similarity in “look and feel” or
intrinsic similarity?

As for the similarities the court did consider, the court
agreed that they were unprotectable scènes à faire. Among other things, Mishan
produced evidence that these similarities were “commonplace in the world of
halogen oven infomercials.”In fact, for
each element allegedly copied, Mishan presented a list of infomercials that
used it before Hearthware did.For
example, “[n]o less than eight previous infomercials demonstrate food cooking and
Hearthware’s infomercials are actually only the third and fourth to
specifically show salmon and asparagus cooked together.”The court concluded that these similarities
were, “as a practical matter, indispensable or at least standard in presenting
a halogen oven infomercial.”Since
Hearthware didn’t identify copying of “any new or novel manners of presenting
these commonplace elements” or copying of footage, its claim failed.The specific words used to describe the
NuWave’s features and the free blender/food processor with purchase were also
unprotectable: “short, purely descriptive phrases concerning a product’s
abilities do not receive protection.While ‘tri-cooking technology’ may bear a resemblance to ‘triple-combo
cooking power,’ both are clearly descriptive phrases that remind viewers that
halogen ovens cook in three different ways.”

Allegations of direct copying couldn’t fix the fundamental
problem: the producer of Mishan’s infomercial stated that the SuperWave
infomercial “[w]ould be better if there were things more substantive like
Nuwave [sic],” in terms of freebies, and Mishan’s CEO responded that “All
freebies should be in the tease Same [sic] like Nuwave [sic],” but no
reasonable jury could find this to be evidence of direct copying.Even if the NuWave infomercial inspired the
Super Wave infomercial, Mishan was free to appropriate uncopyrightable
elements.

Mishan also won summary judgment on the trademark
infringement claims.

The court found that similarity clearly favored Mishan. Except for the term “wave,” which Hearthware’s
registration disclaimed, the coloring, fonts, packaging, and overall
presentation differed, including prominent presentation of the Sharper Image
mark on Mishan’s box and in its marketing.“Despite the shared use the term ‘wave,’ the presentation of the marks
is entirely different.”The products
were of course similar, as were the channels of sales and marketing.

Hearthware argued that its mark was strong because it had
won many awards for its infomercials, but the court found this to shed “no
light” on strength, nor did the fact of the registration.Without further evidence, the court couldn’t
find any particular level of strength.Also, “wave” as used on the products was merely descriptive.A number of third-party halogen ovens,
including FlavorWave and QuickWave, also used the term.Further, at least sixteen other non-halogen
ovens, microwave ovens, and toaster ovens had registered trademarks using
“wave.” Strength strongly favored
Mishan.

Mishan also submitted a survey of approximately 300
respondents likely to purchase a halogen oven through an infomercial. Both
cells saw a shortened NuWave infomercial; the test group saw a shortened Super
Wave infomercial and the control saw a shortened FlavorWave infomercial.In response to the question whether they
thought the products were produced by companies that were either the same or
affiliated, 59% in the control group thought the were produced by the same or
affiliated companies, while only 42% thought that in the test group.

Hearthware had no evidence of actual confusion, though it
argued that it had 159 audio recordings of confused consumers who called its
customer service center.The court
disagreed that these were evidence of confusion.Mishan’s expert conducted a content analysis
and found that they didn’t show actual confusion; though this was contested,
the court concluded that nothing in the record would “support a reasonable inference
that these callers were ‘confused’ regarding the marks.”Among other things, these consumers weren’t
calling to place orders.One Super Wave
owner initially called the Sharper Image number but was incorrectly connected
to Hearthware’s call center, but this didn’t suggest consumer confusion, but
rather mistake by the Sharper Image call center.In a quarter of the calls, the expert couldn’t
determine which oven the caller actually had; as for clear Super Wave customers,
the number of them calling the NuWave line was de minimis, “in light of the
high number of callers correctly calling the number, as well as other factors
unrelated to confusion or due to Hearthware's own actions.”The court pointed out that Hearthware bought “Super
Wave” and “Sharper Image” as keywords and “as
a result, a Google search for ‘super wave oven’ produced the phone number
for NuWave” (emphasis added).Whoops.Query: would these customer
service calls support Mishan’s potential infringement claim against Hearthware?

The court also found favorably with respect to Mishan’s
intent.There was no evidence of
attempted passing off.“Super Wave” was
the name for innocent reasons: it’s based on the cooking technique and fits with
a number of other Mishan Wave products, including the Bacon Wave, Sausage Wave,
Chip Wave, Stone Wave, and Omelet Wave, as well as a number of other Mishan
Super products, including the Super Sewing Machine, Super Scissors, Super 5
Edge Wipers, and Super Hear.

Given the one-sidedness of the evidence, especially on the
three most important factors—similarity of the marks, intent, and actual
confusion—summary judgment for Mishan was warranted.“The only factors that favor Hearthware are
product similarity and the area and manner of concurrent use. These factors
would apply to any competitors in the same product line, regardless of the
likelihood of confusion.”

The remaining claims of false advertising were based on
Mishan’s statements that (1) the Super Wave oven is the result of thirty-two
years of Sharper Image design ingenuity, (2) the Super Wave oven comes with a
five-year Sharper Image warranty, and (3) the Super Wave oven is backed by a
sixty-day money-back Sharper Image guarantee. However, The Sharper Image didn’t engineer the
product, nor are the warranty or guarantee provided by The Sharper Image—they come
from Mishan.

Mishan argued that there was no literal falsity because “The
Sharper Image reviewed and approved the oven, infomercial, packaging,
instructions, and warranty cards. In Mishan's view, this oversight ensured that
the product and its guarantees were consistent with Sharper Image standards.”Thus, it stood in The Sharper Image’s
shoes.The court characterized
Hearthware’s argument as “simpler,” since The Sharper Image neither designed
the oven nor provided the guaranty or warranty, and agreed that a reasonable
jury could find these statements literally false.

However, Hearthware still needed to show materiality.Mishan’s second consumer survey addressed
this (though in a very defendant-favorable way, testing recall instead of comprehension
directly).One hundred and fifty-three
respondents watched a shortened version of the Super Wave infomercial that
included all three allegedly false statements.When asked which elements appealed to them, 5% mentioned either The
Sharper Image or the brand.Eighty-two
percent recalled that there was a warranty, but only 5% mentioned The Sharper
Image or the brand when they were asked what they specifically recalled about
the warranty.Eighty-eight percent
recalled that there was a money-back guarantee, but none specifically recalled
The Sharper Image or the brand.(If it’s
not material, why does Mishan spend so much money and effort on licensing?Or tout it in the infomercials, as the court
emphasized in its confusion analysis?)The court found that Mishan satisfied its burden to show immateriality,
and Hearthware didn’t challenge the survey or submit evidence of its own.Claims dismissed.

In summary, the court said: “Fierce competition is not the
same as unfair competition. Based on the record before the court, the battle
between Hearthware and Mishan belongs in the marketplace rather than the
courthouse.”

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